Conceptual Weakness Versus Commercial Weakness of Trademarks

On Monday, February 24, Chris Kopitzke will lead the discussion about a recent 9th Circuit decision considering work made for hire in a religious setting and termination of copyright transfers. We’ll also examine two 2025 Trademark Trial and Appeal Board appeals that yielded different results based on conceptual weakness versus commercial weakness of the marks at issue.

In Aquarian Foundation, Inc. v. Bruce Kimberly Lowndes, Case No. 22-35704 (9th Cir. Feb. 3, 2025), available here, Aquarian, a non-profit religious organization, alleged that former member Lowndes infringed its copyrights in the spiritual teachings of Rhinehart, Aquarian’s late founder and religious leader, by uploading audio and video recordings of those teachings to various websites and social media. The panel affirmed the district court’s holdings that Rhinehart did not create the materials as works for hire, that Rhinehart validly licensed the works to Lowndes in 1985, that Lowndes did not breach the license agreement, and that ownership in the underlying copyrights passed by will to Aquarian via will after Rhinehart’s death in 1999. However, the panel reversed the district court’s determination concerning Aquarian’s termination of the license, which was incorrectly based on the copyright statute’s termination provisions.

In In re Metabeauty, Inc., Serial No. 97\492,557 (January 28, 2025), available here, the Trademark Trial and Appeal Board reversed a refusal to register the design mark for use with skin care preparations on the basis of a prior registration for TWELVE COSMETICS for related goods, finding the marks dissimilar and holding that 10 third-party registrations incorporating “12” or “TWELVE” were probative of conceptual weakness. Less than two weeks later, in In re Blyth Cowbell Brewing Inc., Serial No. 87,411,623 (February 7, 2025), available here, the TTAB affirmed a refusal to register the mark on the basis of a prior registration for COWBELL CREAM ALE for overlapping goods, finding the marks similar and holding that 11 third-party marks incorporating the word “cowbell” were not sufficient to show more than “slight commercial weakness” of that term. Two of the three TTAB judges were the same in both cases, suggesting that applicants must pay close attention to the distinction between conceptual weakness and commercial weakness when arguing that third-party registrations support narrowing the scope of protection for a cited mark.

All are welcome to attend the program at noon Pacific Time. To join the discussion, please RSVP via email to elisham @ socalip.com (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. This activity has been approved for one hour of CLE credit.